Fonovisa, Inc.v.Aaron Lopez Valdovinos

Trademark Trial and Appeal Board

Jun 2, 2004

No. 91150547 (T.T.A.B. Jun. 2, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Fonovisa, Inc. v. Aaron Lopez Valdovinos
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Opposition No. 91150547 to Application
Serial No. 76236596 filed April 2, 2001
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David A. Stall for Fonovisa, Inc.
Cheryl L. Hodgson for Aaron Lopez Valdovinos.
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Before Seeherman, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Aaron Lopez Valdovinos (applicant) seeks to register
in typed drawing form PUROS CORRIDOS MALANDRINES for a
series of phonographic records, cassettes and compact discs
containing music. The application was filed on April 2,
2001 with a claimed first use date of November 15, 1999.
In his application, applicant stated that “the approximate
English translation of the mark is ‘Truly Scandalous
Ballads.’” Applicant further stated that “one could also
translate the term as ‘Songs of the Good-for-Nothings.’”
Fonovisa, Inc. (opposer) filed a timely Notice of
Opposition in which it stated that it “is a Spanish
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B. June 2, 2004
Opp. No. 91150547
2
language record label that has created, marketed and sold
numerous ballads which are known as ‘Corridos’ in the
Spanish language.” (Notice of Opposition paragraph 3).
Opposer further alleged that the purported Spanish mark
PUROS CORRIDOS MALANDRINES “is merely descriptive of a type
of ballad, and thus not entitled to registration as a
United States trademark.” (Notice of Opposition paragraph
2). While opposer did not make specific reference to
Section 2(e)(1) of the Trademark Act, it is clear that this
is the basis for the Notice of Opposition.
Applicant filed an answer in which he denied the
pertinent allegations of the Notice of Opposition. Both
parties filed briefs. Neither party requested a hearing.
The record in this case is described at pages 1 and 2
of opposer’s brief, and at page 3 of applicant’s brief.
The parties agreed to present all testimony in the form of
declarations. In this regard, opposer submitted the
declaration of Dr. Milton Azevedo. Dr. Azevedo is a
professor of Spanish and Portuguese at the University of
California at Berkeley. Applicant submitted the
declaration of Dr. Gerado Luzuriaga. Dr. Luzuriaga is
Professor and Chair of the Department of Spanish and
Portuguese at the University of California at Los Angeles.
Opp. No. 91150547
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Obviously, this case involves the “doctrine of foreign
equivalents,” where “foreign words are translated into
English and then tested for descriptiveness or
genericness.” 1 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, Section 11:33 at page 11-58 (4th ed.
2002). The issue before this Board is whether the Spanish
mark PUROS CORRIDOS MALANDRINES, when translated into
English, is merely descriptive of a series of phonographic
records, cassettes and compact discs containing music.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978) (emphasis added);
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976). Moreover, the immediate
idea must be conveyed forthwith with “one degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
The crux of the testimony of Dr. Luzuriaga is that
“malandrines” is a “grammatically ambiguous word” in that
“it can be both a noun and an adjective.” Continuing, Dr.
Opp. No. 91150547
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Luzuriaga states that “to say ‘corridos malandrines’ is to
say ‘wicked ballads’ but also ‘bandits’ ballads,’ which is
odd. It is an unusual syntactical construction.” (Dr.
Luzuriaga declaration pages 2 and 3). Dr. Luzuriaga
concludes by saying that “the phrase ‘puros corridos
malandrines,’ which can be translated as ‘true wicked
ballads’ and ‘bandits’ ballads,’ is a clever combination of
words.” (Dr. Luzuriaga declaration page 4).
Opposer’s witness Dr. Milton Azevedo really does not
dispute the key points of Dr. Luzuriaga’s declaration. At
page 3 of his declaration Dr. Azevedo states as follows:
“In view of the above it is appropriate to interpret the
phrase ‘puros corridos malandrines’ as meaning that the
contents of a given CD are ‘nothing but ballads about
rouges,’ or ‘sheer roguish ballads,’ or ‘sheer rogue’s
ballads.’” (emphasis added). Thus, both Dr. Luzuriaga and
Dr. Azevedo agree that applicant’s mark can have two quite
different meanings, namely, “truly wicked ballads” or
“bandits’ ballads.” Of course, as previously noted, in his
application applicant contended that when translated into
English his Spanish mark would have two distinctly
different meanings.
Not only do Dr. Luzuriaga and Dr. Azevedo agree that
applicant’s mark has at least two distinctly different
Opp. No. 91150547
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meanings, but in addition, both experts agree that
applicant’s mark “is a clever combination of words.” (Dr.
Luzuriaga declaration paragraph 4). In this regard, Dr.
Azevedo states as follows at page 3 of his declaration:
“Dr. Luzuriaga correctly points out that the phrase ‘puros
corridos malandrines’ is ‘a clever combination of words.’
It could hardly be otherwise. One of the hallmarks of
advertising language is precisely its appeal to the
consumer, and consequently clever word combinations are
exactly what one would expect to find on the label of any
competitively marketed product.”
Opposer had the burden of establishing that
applicant’s mark PUROS CORRIDOS MALANDRINES is merely
descriptive. Opposer has simply failed to carry that
burden. Not only has opposer’s expert Dr. Azevedo conceded
that applicant’s mark, when translated into English, can
have at least two very different meanings, but in addition
opposer’s own expert states that applicant’s mark “is a
clever combination of words.” In short, applicant’s mark
when translated into English simply fails to convey an
immediate idea of any quality or characteristic of
applicant’s goods with the required “one degree of
particularity.” TMS Corp. of the Americas, 200 USPQ at 59.
A truly wicked ballad is quite distinct from bandits’
Opp. No. 91150547
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ballads. The former conjures up images of dirty songs,
whereas the latter conjures up images of songs about
bandits. While one would never purchase for a child a CD
whose subject matter was the former, one might purchase for
a child a CD whose subject matter was the latter. That is
to say, songs or ballads about bandits may well be
appropriate for a child. Accordingly, we find that
applicant’s mark is simply not merely descriptive.
Decision: The opposition is dismissed.